The marks Jay-Z has for his nightclubs, “40/40” and “40/40 Club,” are US trademarks.  Also, Ortiz is not a citizen of the US, but rather he is a citizen of the Dominican Republic which further distances him from the jurisdiction of US trademark law.

The markets for nightclubs in the US and the Dominican Republic are clearly separate as they are at a vast distance from each other. Since direct competition is unlikely, Jay-Z’s most valid concern would be that Ortiz’s club is trading off of the prestige of his “40/40” trademark.  He can claim that Ortiz’s use of his trademark weakens its validity.  Also, a negative impression of Ortiz’s club could easily create a negative impression of Jay-Z’s club in the consciences of consumers due to the incredible similarity between the names.  That being said, as long as Ortiz is not marketing the club in the United States, it can make it very difficult for Jay-Z to enjoin his use of the mark.

You might be wondering how it could be that Ortiz and Jay-Z came up with the same idea for names of their nightclubs.  It may help to note that the “40/40 Club” is a reference to the club of elite baseball players who manages to steal 40 bases and hit 40 home runs in a single season (Ortiz is not a member of this club).  It makes sense, then, why both Ortiz and Jay-Z who obviously have interest in baseball would choose a name for their clubs that refers to an elite club within the game.

Perhaps the lesson to be learned from this dispute is that people can and do come up with the same ideas, and it pays to be the first to register a trademark with the USPTO.  Jay-Z may not be able to stop the use of “Forty Forty” in the Dominican Republic because of international limitations, but he will definitely be able to stop any infringement on his name within the US.

Generally speaking, a trademark is a word, symbol, device or name that identifies the source of a good or service. Therefore, your trademark could be just a name, or it could be a logo, a slogan, or “tagline.” More recently, trademark law has expanded to the point where you can even register a particular smell as a trademark. At the very core, a trademark is used to associate a good or service with a particular company. Trademarks are intended to prevent consumer confusion by immediately distinguishing the producer of a good or service.

In order to assist you in completing a successful trademark application that will not be denied by the USPTO, I will utilize our trademark search software to search for any existing marks that may potentially conflict with yours. If such a conflict arises, I will offer my legal advice to you as an attorney on the risks involved in proceeding with your particular application or what you may need to change about your mark to avoid an infringement issue.

In addition to receiving questions about trademarks, I often receive many inquiries concerning patents and copyrights. While all three may appear similar, there are important distinctions that exist between each. As previously stated, a trademark protects an identifier of a good or service. Patents, on the other hand, protect ideas like inventions. Lastly, a copyright protects original works that are typically placed in the following categories: literature, dramatic, musical, artistic, and intellectual. Therefore, the content of a book is protected by copyright law while the name of a series of books (e.g. Harry Potter) would be protected by trademark law.

Josh Gerben, Esq.
Principal
Gerben Law Firm, PLLC
1615 L Street NW
Suite 1350
Washington, DC 20036

(p) 202.294.2287
(f) 202.315.3386

The difference between any other trademark and a trademark for a band is that a band’s trademark tends to always fall under two separate “classes” as designated by the United States Patent and Trademark Office.  When  a trademark application is filed, the application requires that the applicant identify the “class” of goods or services which the trademark identifies.  There are 45 different classes.  In the case of a band, it almost always requires registration under two classes (Class 9 for MP3′s and CD’s and Class 41 for concerts).

If your band produces CDs, or downloadable music files (MP3′s), your band’s name is the identifier of these “products.”  Therefore, it is necessary to designate on the trademark application that your band name produces these products under Class 9.

In addition, if your band performs concerts, your band’s name is the identifier of these “services.”  Therefore, it is necessary to designate on the trademark application that your band name sells these services under Class 41.

Therefore, you can certainly trademark a band name.  When you file the tradmeark application you will be protected from anyone else using the band’s name to sell music or perfom concerts.  In order to obtain this protection please click on the “register your trademark” link below.  Once you complete our online form an attorney will contact you to go over the details of the trademark for your band.

Josh Gerben, Esq.
Principal
Gerben Law Firm, PLLC
1615 L Street NW
Suite 1350
Washington, DC 20036

(p) 202.294.2287
(f) 202.315.3386

My law firm was built to provide trademark search and application help to anyone or any business who has a name or a logo that they want to protect.  While anyone can go online and attempt to fill out a trademark application themselves, the process contains many technical details that are not apparent on the face of the application.  Failure to properly complete a trademark application can lead to its denial by the federal government.  My law firm works to help ensure that your trademark application will be accepted by the federal government and avoid the common mistakes made in applications.

A federal trademark is the strongest protection that any business can have on its name or logo.  My firm helps hundreds of businesses every year register a trademark.  If you are unsure how to get started in the trademark search and registration process please give me a call today.  I am always available to help in the trademark search and registration process.

Josh Gerben, Esq.
Principal
Gerben Law Firm, PLLC
1615 L Street NW
Suite 1350
Washington, DC 20036

(p) 202.294.2287
(f) 202.315.3386

While this USA trademark application can be completed by anyone, I highly recommend to potential clients that they retain my firm to complete their trademark application.  The reason I recommend retaining a USA trademark attorney to draft and file a trademark application is because there are many technical and legal elements hidden in the USA trademark application.  If certain information is not entered correctly, it could lead to rejection of the USA trademark application and loss of any priority established on the trademark.

Moreover, to register a trademark in the USA it is imperative to first conduct a USA trademark search.  If a trademark search is not conducted prior to an attempt to register a trademark in the USA a client may not be aware of a pre-existing federal, state or common law trademark that could result either in the rejection of a USA trademark application or in a limitation of the client’s rights in their trademark.  Therefore, to register a trademark in the USA I recommend to potential clients that they retain my law firm to assist them in conducting a proper USA trademark search and then for the drafting and filing of the USA trademark application.

Once a USA trademark application is filed, a client must then wait for the U.S. Government to review and approve their application.  It generally takes about 8-10 months to register a USA trademark from the date the application is filed.  However, so long as the USA trademark application is ultimately approved, the trademark rights start on the date the USA trademark application was filed.  Therefore, when a client wants to register a USA trademark to protect their rights, they can be assured that no one will be able to attempt to register a USA trademark that is similar to theirs after the date of their USA trademark application filing.

To get started with the process to register a USA trademark please follow the link below.

A comprehensive trademark search and filing package includes not only a search of federal trademark filings to ensure no one else has filed for a federal trademark, but also includes a search of each state’s trademark database and a search of all unregistered use of the proposed trademark.  The reason this comprehensive trademark search and filing package is so important is that if anyone else had made a state trademark filing or simply had used my client’s proposed trademark in commerce (i.e. common law use of the trademark) prior to the filing date of my client’s trademark with the United States Patent and Trademark Office, this individual or company would have the right to keep my client from using the trademark in the geographic region in which the trademark was being used prior to my client’s federal trademark filing.  This could severely limit my client’s ability to use their trademark as they desire.

Therefore, it is only a comprehensive trademark search and filing package that can give full legal clearance for use of a trademark.  If a client elects only to conduct a federal trademark search on their trademark they may not know about a state registration or common law use of their proposed trademark which could limit their trademark rights.

For more information on Gerben Law Firm’s comprehensive trademark search and filing package please contact Attorney Josh Gerben at (202) 294-2287.

Unfortunately there are no expedited fees that can be paid to make the U.S. trademark registration process move any quicker.  The fact is that every U.S. trademark application must be reviewed by a trademark examining attorney with the United States Patent and Trademark Office (USPTO).  Because of the large volume of trademark applications received by the USPTO it generally takes four months just for the US trademark application to reach a US trademark examining attorney.  Once the examining attorney reviews the U.S. trademark application, if he/she does not have any problems with the proposed U.S. trademark registration, then the trademark application must go for a thirty day period of public comment.  It is only after this period of public comment closes can the U.S. trademark registration be issued.

Therefore, a successful U.S. trademark registration can be accomplished in as little as six months, however, many U.S. trademark applications require additional steps.  For example, the trademark examining attorney may require additional clarifications on the application.  Or, the attempted US trademark registration may be rejected on one of many grounds.  A trademark rejection may always be appealed, however, this adds multiple months to the process.

To ensure that a client’s US trademark registration attempt avoids these pitfalls, I generally encourage clients to complete a comprehensive trademark search to ensure that the trademark application will not be rejected based on a pre-existing similar trademark.  In addition, I highly recommend clients follow my advice on the completion of their U.S. trademark application to ensure the process goes as smoothly as possible.  At the end of the day, the US trademark registration process affords clients great protection on their trademarks, it just requires the patience of Job.

Many of my clients find this troubling since they are unsure if they should make a large investment in marketing a trademark before the trademark registration process is completed and the trademark registration certificate is issued by the U.S. Government. However, even the largest companies must rely on their attorney’s advice as to whether their trademark will be approved by the United States Patent and Trademark Office during the trademark registration process. And sometimes that advice can lead to a trademark application being denied. For example, Google’s recent trademark application for “Android” for a cell phone browser was denied by the USPTO for being confusingly similar to an existing trademark. Since Google could not wait the 6-18 months for the trademark registration process to be completed, Google made a significant investment in marketing Android. The denial of the trademark application after such a significant investment was made no doubt causes difficulty for Google.

Due to the cold realities of the trademark registration process, I advise my clients that there is always risk involved with the trademark registration process. Much like any other legal proceeding, no trademark attorney can guarantee the success of a trademark application. However, I can provide my clients with very valuable advice as to whether a trademark application may be approved or denied. By conducting a thorough trademark search that only an experienced trademark attorney can conduct, I can help clients assess whether or not their trademark application is likely to be approved or denied.

The bottom line is that the trademark registration process is just another part of the risk of being in business. There is nothing any trademark attorney can do to take away all the risk in the trademark registration process, but a trademark attorney can certainly help minimize the risk businesses face in this daunting process.

However, one of the little known advantages to registering a trademark is the power that a federal trademark provides a business in dealing with other private companies.  For example, some clients have called me after finding that competitors are disparaging their good name in online pay-per click advertisements.  What surprises my clients is that a competitor can actually post an ad on GOOGLE or YAHOO that uses their un-registered trademark and criticizes their product or service right in the headline of the ad.  Moreover, without a federal trademark registration, GOOGLE will not help remove the advertisement.  After calling GOOGLE in an attempt to have the ad removed, I often find my soon-to-be client’s next call is my office (after being told by GOOGLE that there is nothing GOOGLE can do).  This is because GOOGLE advises my soon-to-be client to register their trademark with the United States Patent and Trademark Office since GOOGLE will only help a business remove an unauthorized use of it’s trademark if the trademark is registered with the United States Patent and Trademark Office.

I believe there will be an increased trend whereby private companies (such examples includes Facebook, Twitter, etc.) rely on a registered trademark to police the use of business and product names.  Those individuals who do not register a trademark with the United States Patent and Trademark Office will be left with no means to enjoin the use of their trademarks besides an expensive lawsuit against the private company.  This should make the cost of registering a trademark look much less expensive.

To get started on your trademark registration click here or call 1-877-350-6275.